Re: THANKS MUCH, JOE

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On 3/13/03, Kerri Redden wrote:
>
> Joe -
>
> I sincerely appreciate your advice and your taking the time to
> post. I've got years of legal experience but lost when it
> comes to this area and I'm from a fairly small town and to my
> knowledge we don't have a local patent attorney.
>
> At this juncture all we have is the idea and a prototype of
> sorts. My initial concerns are:
>
> 1. The idea itself is both needed in the marketplace and novel
> to the best we can tell (but see #2). However, we're using
> existing technologies -- just in a new application. Since the
> techologies already exist, can we still get a patent?
>
> 2. I did find through research that a somewhat similar product
> was evidently recently "developed". However I've not found a
> patent pending using any key word searches at the patent office
> web site. In your mind, does that suggest a patent has not yet
> been applied for and that we might should move pretty quick?
>
> Again, Joe, you're a good man for taking the time for an
> absolute stranger. I do appreciate you.
>
> Take Care!
> Kerri

********************************
Kerri

You can look for patent attorneys in your area via the USPTO
website. You may not have one in your town. Maybe your contacts
in the legal profession can help you find someone.

An idea and a prototype of sorts is more than enough to start the
application process.

Regarding #1 in your post, the new use (i.e., new application) of
existing technology CAN be patentable. In fact, anything CAN be
patentable if it is novel and not an obvious extension of the
existing technology. Novelty and obviousness are always
determined based on the claims of your patent application (which
define your invention) as compared to the existing technology.
Not knowing either one, its impossible for me (or anyone else) to
say that your idea IS patentable.

Item #2 in your post gets complicated. When you file a patent
application, your claims will be compared against the "prior
art". There are rules as to what qualifies as "prior art".
Basically, any product or process that was "public" (because its
described in a patent, or a publication, or was in public use or
on sale) for more than a year before you file your patent
application will qualify as "prior art." This similar product
you mention may be "prior art" depending on how long it has
been "public", even though there is no patent issued on it. In
the US (and most other countries in the world), patent
applications are not published any earlier than 18 months afetr
the application is filed. And, in some cases, a US patent
application will never become public until it issues as a granted
patent. Thus, the simple fact that you did not find a patent on
the similar product does not mean (1) that there is no
application pending or (2)that the product will not be prior art
to your invention. It wasn't clear from your post if you also
did a keyword search on published applications on the USPTO site,
as opposed to just issued patents. If you want to go global, you
can check out www.ep.espacenet.com and search by keyword for
patents and published applications from Japan, the US and Europe.

With patents, it is always best to move quickly. In the US, the
patent goes to the first person to make the invention. In most
other parts of the world, the patent goes to the person who filed
their application first. Thus, if you and I independently make
the same invention and you did it first but I filed my patent
application first, you would get the patent in the US and I would
get the patent everywhere else. Even in the US, however, you
need to show diligence in filing your application because if you
delay too long, you might be deemed to have abandoned or
supressed the invention and lose our right to a patent.

Good luck.

Joe

Re: I NEED PATENT ADVICE, 5/25/03, by Hardy Parkerson, Atty..

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